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United States Court of Appeals,Federal Circuit.

INPRO II LICENSING, S.A.R.L., Plaintiff-Appellant, v. T-MOBILE USA, INC., Research in Motion Limited, and Research in Motion Corporation, Defendants-Appellees.

No. 05-1233.

Decided: May 11, 2006

Before NEWMAN, DYK, and PROST, Circuit Judges. Robert D. Rhoad, Dechert LLP, of Princeton, New Jersey, argued for plaintiff-appellant.   With him on the brief were Martin J. Black and Marc S. Segal, of Philadelphia, Pennsylvania. Linda S. Resh, Kirkland & Ellis LLP, of Chicago, Illinois, argued for defendants-appellees.   With her on the brief were Craig D. Leavell, Jamie H. McDole, and Aaron D. Charfoos.


I join the judgment of noninfringement, but write separately to state my concern with this court's decision not to give appellate review to all of the claim terms whose construction was decided by the district court and challenged on appeal.

The district court construed eight disputed terms, and the parties challenge the correctness of construction of three of these terms.   The stipulation of noninfringement was based on the two terms “docking with the host computer” and “host interface,” and the construction of “digital assistant module” was challenged as so broad as to affect the validity of the patent.   The parties have briefed and argued the construction of all three disputed terms;  my colleagues have declined to review any term other than “host interface.”

I agree that “host interface” is dispositive of infringement by T-Mobile and the other defendants in this case.   However, I believe we have the obligation to review the construction of the three appealed terms, for the interests of the parties and the public, as well as judicial economy, require final disposition of the issues of claim construction that were decided by the district court, and raised on appeal.   This panel's resolution of this infringement action based solely on the construction of “host interface” does not resolve, or render moot, the interpretation of the other disputed terms.   The Supreme Court in Cardinal Chemical Company v. Morton International, 508 U.S. 83, 113 S.Ct. 1967, 124 L.Ed.2d 1 (1993), explained the applicable principles:

[T]he Federal Circuit is not a court of last resort.   If that court had jurisdiction while the case was pending before it, the case remains alive (barring other changes) when it comes to us.   The Federal Circuit's determination that the patents were not infringed is subject to review in this Court, and if we reverse that determination, we are not prevented from considering the question of validity merely because a lower court thought it superfluous.

I.d. at 97.   Thus the Court ruled that a “finding of noninfringement alone” does not justify appellate refusal to reach additional issues that were decided in the district court and are disputed on appeal.  Id. at 102.   My colleagues' decision not to review the other disputed issues of claim construction leaves unresolved the scope and viability of the claims, for these aspects are relevant to the validity and further applicability of the patent in suit.

The Court in Cardinal Chemical did not ignore that considerations of judicial economy might justify appellate refusal to address issues that are “generally more difficult and time consuming to resolve.”  Id. at 99, 113 S.Ct. 1967 (“the interest in the efficient management of the court's docket might support such a rule”).   But that is not the situation here.   To the contrary:  we have necessarily reviewed the relevant technology, the specification and the prior art, the prosecution histories of this and related applications, the disputed claim terms and their application to the accused device, and the Markman record.   See N. Am. Vaccine v. Am. Cyanamid Co., 7 F.3d 1571, 1579 (Fed.Cir.1993) (“since we have thoroughly reviewed the case, no added judicial effort is involved” in reviewing the district court's validity rulings).

Even if some of the claim construction issues are somewhat more complex, Cardinal Chemical holds that “countervailing concerns,” such as the importance of the issues to the parties and to the public, require that we provide appellate review to the district court's decision.  508 U.S. at 99-100, 113 S.Ct. 1967.   The principles of Cardinal Chemical apply in this case, for a “company once charged with infringement must remain concerned about the risk of similar charges if it develops and markets similar products in the future.”  Id.

In addition, when a cloud of uncertainty is placed on a patent's claims, “the patentee may have lost the practical value of a patent that should be enforceable against different infringing devices.”  Id. at 102, 113 S.Ct. 1967.   Such may be the case here, for our refusal to review the district court's possibly overly broad construction of “digital assistant module” may place a cloud of uncertainty on the validity of the '079 patent.   See N. Am. Vaccine, 7 F.3d at 1579 (the proceedings should not leave “a cloud on the patent”).   There is a “strong public interest” in the finality of issues that may be relevant to patent validity.  Cardinal Chemical, 508 U.S. at 100, 113 S.Ct. 1967;  see Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 330, 65 S.Ct. 1143, 89 L.Ed. 1644 (1945) (courts should inquire “fully” into the validity of a patent, for as between infringement and validity, “validity has the greater public importance”).   My colleagues' refusal to review the disputed claim terms imposes “ongoing burdens on competitors,” Cardinal Chemical, 508 U.S. at 101, 113 S.Ct. 1967, as well as on the patentee.   See Carroll Touch, Inc. v. Electro Mech. Sys., 15 F.3d 1573, 1579 (Fed.Cir.1993) (reviewing validity issue “so that neither Carroll Touch nor the public are left with unnecessary uncertainty concerning the validity of the claims at issue”).

Only time will tell whether any future action will invoke or relitigate the Inpro claim construction issues.   See, e.g., Texas Instruments, Inc. v. Linear Techs.   Corp., 182 F.Supp.2d 580 (E.D.Texas 2002) (the court may defer to a prior claim construction, though it is not necessarily bound by it);  Abbott Labs. v. Dey, L.P., 110 F.Supp.2d 667 (N.D.Ill.2000) (applying issue preclusion to a claim construction by another district court, although also considering whether the previous construction was “plainly wrong”);  Nilssen v. Motorola, Inc., 80 F.Supp.2d 921, 924 n. 4 (N.D.Ill.2000) (prior claim construction was worthy of respect, though not necessarily preclusive effect);  TM Patents, L.P. v. Int'l Bus. Machs.   Corp., 72 F.Supp.2d 370 (S.D.N.Y.1999) (ruling that prior claim construction by a different district court was entitled to preclusive effect).

It is not optimum appellate policy to require the patentee to endure another Markman proceeding, “past the entirety of discovery, past the entire trial on the merits, past post trial motions, past briefing and argument to the Federal Circuit-indeed past every step in the entire course of federal litigation, except Supreme Court review”-before obtaining appellate review of the disputed questions that are now presented for our review.   See Cybor Corp. v. FAS Techs., 138 F.3d 1448, 1476 (Fed.Cir.1998) (Rader, J., concurring).   Counseled by Cardinal Chemical, the better practice is to review the major issues of claim construction that are disputed on appeal, unless such issues have no further reasonable relevance.   The public and private interests in valid (and invalid) patents, and in this case the fact that we have done most of the judicial work anyway, combine to weigh on the side of appellate review.   Our incomplete resolution of the claim construction issues falls short of the entitlement of litigants to “one full and fair opportunity” to have disputed issues resolved.  Cardinal Chemical, 508 U.S. at 102, 113 S.Ct. 1967.

The Federal Circuit is responsible to ensure that patents are uniformly and correctly interpreted, for “the limits of a patent must be known for the protection of the patentee, the encouragement of the inventive genius of others and the assurance that the subject of the patent will be dedicated ultimately to the public.”  Markman v. Westview Instruments, Inc., 517 U.S. 370, 390, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996).   This court's current posture enlarges the conflict.   Compare, e.g., Boss Control, Inc. v. Bombardier Inc., 410 F.3d 1372, 1380 n. 2 (Fed.Cir.2005) (declining to review all disputed claim constructions), with Chimie v. PPG Indus.   Inc., 402 F.3d 1371, 1383 (Fed.Cir.2005) (“judicial economy would be best served by our reviewing this second claim construction issue”) and Microsoft Corp. v. Multi-Tech Sys., Inc., 357 F.3d 1340, 1351 & n. 6 (Fed.Cir.2004) (reviewing all disputed claim terms, not just those necessary to resolve the appeal).   We should review and decide all three of the disputed claim terms that are presented on this appeal, lest our silence leave a cloud of uncertainty on the patent, its scope, and its validity.   Our obligation to the system of patent-based innovation requires no less.

Opinion for the court by Circuit Judge NEWMAN;  additional views by Circuit Judge NEWMAN.

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